DETAILED ACTION
This is in response to the applicant’s communication filed on 3/31/26, wherein:
Claims 1, 4-9, 12-16, and 19-26 are currently pending; and
Claims 2, 3, 10, 11, 17, and 18 are cancelled.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-9, 12-16, and 19-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites a device and therefore, falls into a statutory category. Similar independent claims 9 and 16 recite a method and a computer readable medium, and therefore, also fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?): The underlined limitations of
one or more memories; and
one or more processors, coupled to the one or more memories, configured to:
generate, based on a received contract, a first smart contract,
wherein a smart contract is a computer protocol executed by a computer device, configured to digitally analyze a contract, and is configured as a state machine, processed by a computer device, that includes states defined by terms of the contract,
wherein the state machine is generated using machine language comprising a plurality of conditions or variables that permit a state of the smart contract to change according to the conditions or variables,
wherein the first smart contract is generated based on parsing the received contract using a natural language processing technique to identify contract terms and based on automatically generating a first state machine from the identified terms,
wherein the first smart contract is associated with an entity that stores a plurality of smart contracts in a distributed ledger,
wherein the distributed ledger uses blockchain technology where a plurality of smart contracts is stored as linked blocks within the blockchain, and
wherein the distributed ledger is accessed by a network of nodes with various levels of access to the distributed ledger;
generate, based on at least one of a plurality of conditions or a plurality of variables associated with one or more smart contracts that include the first smart contract, a state machine defining a plurality of states of the one or more smart contracts;
execute a first code of the first smart contract with input related to the received contract,
wherein the first code is associated with a first state machine corresponding to the first smart contract;
determine, based on executing the first code, a first state of the first smart contract, the first state being defined by the first state machine;
identify, based on information of the received contract, a second smart contract that is associated with the entity associated with the first smart contract;
execute, based on identifying the second smart contract, a second code of the second smart contract by providing to the second smart contract at least a portion of the input,
wherein the second code is associated with a second state machine corresponding to the second smart contract;
determine, based on executing the second code, a second state of the second smart contract, the second state being defined by the second state machine,
wherein the first smart contract and the second smart contract include computer protocols to digitally facilitate a contract;
determine, based on comparing the first state and the second state, whether a conflict exists between the first smart contract and the second smart contract;
wherein the comparison comprises conflict detection is performed by the device based on comparing current or potential states of the first state machine and the second state machine;
and
perform, based on determining whether the conflict exists between the first smart contract and the second smart contract, an action,
wherein the action includes adding the first smart contract to the distributed ledger and updating the distributed ledger when no conflict exists between the first smart contract and the second smart contract, and
wherein the action includes appending a time sensitive flag to the first smart contract by adding a data field, that corresponds to the flag, within a block of the distributed ledger, that permits the first smart contract to be included within the distributed ledger for a specified period of time,
wherein the first smart contract is invalidated after expiration of the specified period of time based on the conflict not being resolved within the specified period of time.
are processes that, under their broadest reasonable interpretation, are considered certain methods of organizing human activity – commercial or legal interactions (including agreements in the form of contracts and marketing or sales activities or behaviors) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The claims are directed to determining whether a conflict exists between two smart contracts and performing actions based on whether the conflict exists. Specification ¶3. Accordingly, the claim recites an abstract idea.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?): This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of one or more memories and one or more processors (which are considered computer components). The computer components are recited at a high-level of generality (i.e., as a generic processing device performing generic computer functions), such that they amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea when considered both individually and as a whole. The claim is directed to an abstract idea.
The italicized limitations identified in Step 2A, Prong 1 (above) provide nothing more than mere instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f). MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. Here, the computers are invoked merely as a tool to perform existing processes (wherein a smart contract is a computer protocol executed by a computer device, configured to digitally analyze a contract, and is configured as a state machine, processed by a computer device, that includes states defined by terms of the contract, wherein the state machine is generated using machine language comprising a plurality of conditions or variables that permit a state of the smart contract to change according to the conditions or variables, wherein the first smart contract is generated based on parsing the received contract using a natural language processing technique to identify contract terms and based on automatically generating a first state machine from the identified terms, wherein the distributed ledger uses blockchain technology where a plurality of smart contracts is stored as linked blocks within the blockchain, and wherein the distributed ledger is accessed by a network of nodes with various levels of access to the distributed ledger; generate, based on at least one of a plurality of conditions or a plurality of variables associated with one or more smart contracts that include the first smart contract, a state machine defining a plurality of states of the one or more smart contracts; wherein the state machine is generated using state machine language; execute a first code of the first smart contract with input related to the received contract, executing the first code; wherein the first code is associated with a first state machine corresponding to the first smart contract; the first state being defined by the first state machine; execute, based on identifying the second smart contract, a second code of the second smart contract by providing to the second smart contract at least a portion of the input, wherein the second code is associated with a second state machine corresponding to the second smart contract; the second state being defined by the second state machine; executing the second code; adding the first smart contract to the distributed ledger and updating the distributed ledger). See MPEP 2106.05(f).
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the generating, executing, determining, identifying, and performing steps amount to no more than mere instructions to apply the exception using a generic computer component. Further, the claims simply append well-understood, routine, and conventional (WURC) activities previously known to the industry, specified at a high level of generality, to the judicial exception, in the form of the extra-solution activity. The courts have recognized that the computer functions claimed (the storing, accessing, adding, and updating limitations [Examiner notes that the storing and accessing limitations are not clearly positively claimed and are only included here in case the limitations should be positively claimed) as WURC (see 2106.05(d), identifying storing information in memory as WURC, as recognized by Versata, and identifying receiving or transmitting data over a network as WURC, as recognized by Symantec). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible, as when viewed individually, and as a whole, nothing in the claim adds significantly more to the abstract idea.
Dependent claims 4-8, 12-15, and 19-26 merely add further details of the abstract steps/elements recited in claims 1, 9, or 16 without including a practical application or significantly more than the abstract idea. Therefore, dependent claims 4-8, 12-15, and 19-26 are also non-statutory subject matter.
Dependent claims 4, 12, and 19 further limit the abstract idea by introducing the element of determining that the conflict non longer exists and in response, storing the first contract, which does not include a practical application or significantly more than the abstract idea.
Dependent claims 5, 13, and 20 further limit the abstract idea by introducing the element of storing the smart contracts in a block of a blockchain, which does not include a practical application or significantly more than the abstract idea.
Dependent claims 6 and 14 further limit the abstract idea by introducing the element of the first state being defined based on a first condition and a variable and wherein the first condition causes the smart contract to be compliant or non-compliant based on the variable, which does not include a practical application or significantly more than the abstract idea.
Dependent claim 8 further limits the abstract idea by introducing the element of the conflict being determined based on at least one of the smart contracts being in violation of a respective term of at least one of the smart contracts, which does not include a practical application or significantly more than the abstract idea.
Dependent claims 21-23 further limit the abstract idea, but do not include any additional elements other than the ones discussed above, and therefore, do not include a practical application or significantly more than the abstract idea.
Dependent claims 24-26 further limit the abstract idea by introducing the elements of determine, based on historical data associated with detecting conflicts between smart contracts, a probability that the conflict exists and include the additional element of using a machine learning model, which provides nothing more than mere instructions to implement the abstract idea on a generic computer and therefore, does not include a practical application or significantly more than the abstract idea.
In light of the detailed explanation and evidence provided above, the Examiner asserts that the claimed invention, when the limitations are considered individually and as whole, is directed towards an abstract idea.
Subject Matter Distinguished from Prior Art
The prior art of record neither anticipates nor supports a conclusion of obviousness without the use of impermissible hindsight with respect to claims 1, 4-9, 12-16, and 19-26.
The most closely applicable prior art of record is Christidis et al. (US 20180096360). Christidis discloses a system for enforcing a smart contract execution hierarchy on a blockchain (abstract) wherein an enterprise may require new contracts comply with the terms of a previous contract between the enterprise and another business entity (Christidis [0017]).
Christidis et al. (US 20180089638) is also closely related prior art. Christidis ‘638 discloses a system for using ledger sensors to enable contextual contracts across various enterprise blockchain applications (abstract).
Chapman et al. (US 20180227116) is also closely related prior art. Chapman discloses a similar system for deploying new code on a blockchain (abstract).
Deshpande et al. (US 20190108140) is also closely related prior art. Deshpande discloses a similar system for smart contract creation and monitoring (abstract).
Zhang (US 20180123779) is also closely related prior art. Zhang discloses a similar system for flexible blockchain smart contract deployment (abstract).
Referring to claim 1, the prior art of record neither anticipates not fairly and reasonable teach a device comprising:
one or more memories; and
one or more processors, coupled to the one or more memories, configured to:
generate, based on a received contract, a first smart contract,
wherein a smart contract is a computer protocol executed by a computer device, configured to digitally analyze a contract, and is configured as a state machine, processed by a computer device, that includes states defined by terms of the contract,
wherein the state machine is generated using machine language comprising a plurality of conditions or variables that permit a state of the smart contract to change according to the conditions or variables,
wherein the first smart contract is generated based on parsing the received contract using a natural language processing technique to identify contract terms and based on automatically generating a first state machine from the identified terms,
wherein the first smart contract is associated with an entity that stores a plurality of smart contracts in a distributed ledger,
wherein the distributed ledger uses blockchain technology where a plurality of smart contracts is stored as linked blocks within the blockchain, and
wherein the distributed ledger is accessed by a network of nodes with various levels of access to the distributed ledger;
generate, based on at least one of a plurality of conditions or a plurality of variables associated with one or more smart contracts that include the first smart contract, a state machine defining a plurality of states of the one or more smart contracts;
execute a first code of the first smart contract with input related to the received contract,
wherein the first code is associated with a first state machine corresponding to the first smart contract;
determine, based on executing the first code, a first state of the first smart contract, the first state being defined by the first state machine;
identify, based on information of the received contract, a second smart contract that is associated with the entity associated with the first smart contract;
execute, based on identifying the second smart contract, a second code of the second smart contract by providing to the second smart contract at least a portion of the input,
wherein the second code is associated with a second state machine corresponding to the second smart contract;
determine, based on executing the second code, a second state of the second smart contract, the second state being defined by the second state machine,
wherein the first smart contract and the second smart contract include computer protocols to digitally facilitate a contract;
determine, based on comparing the first state and the second state, whether a conflict exists between the first smart contract and the second smart contract;
wherein the comparison comprises conflict detection is performed by the device based on comparing current or potential states of the first state machine and the second state machine;
and
perform, based on determining whether the conflict exists between the first smart contract and the second smart contract, an action,
wherein the action includes adding the first smart contract to the distributed ledger and updating the distributed ledger when no conflict exists between the first smart contract and the second smart contract, and
wherein the action includes appending a time sensitive flag to the first smart contract by adding a data field, that corresponds to the flag, within a block of the distributed ledger, that permits the first smart contract to be included within the distributed ledger for a specified period of time,
wherein the first smart contract is invalidated after expiration of the specified period of time based on the conflict not being resolved within the specified period of time.
The other independent claims, claims 9 and 16, are distinguishable from prior art on a similar basis. Examiner notes that the underlined limitations above, in combination with the other limitations found within the independent claims are not found in the prior art.
Response to Arguments
Statement Regarding Substance of Interview
Applicant states that “Examiner agreed that the proposed amendments, substantially included in this response, appear to overcome the 101 rejection.” Remarks 17. Examiner notes the Interview Summary of 3/30/26 provides the Examiner’s summary of the interview.
Rejection under 35 USC 101
Applicant argues that the amended claims are patent eligible for “the reasons presented in the interview.” Remarks 17. Applicant’s first argument from the Interview Summary is that the priority date of the patent family is 2019 and the claimed subject matter includes features that were technical improvements in 2019, especially related to the blockchain technology and the use of smart contracts and state machines. Remarks 16. However, Applicant has not provided any evidence to demonstrate that one of ordinary skill in the art would understand that the that the disclosed invention improves technology. Rather, Applicant’s invention appears to be directed to simply automating the process of determining whether a conflict exists between two smart contracts and performing actions based on whether the conflict exists. There does not appear to be an improvement to technology itself.
Applicant’s remarks from the Interview indicate that the Applicant is arguing that the claims are integrated into a practical application and provide significantly more than the judicial exception through the combination of the “amended portions and the highlighted portions.” Remarks 15. Examiner could not identify any highlighted portions other than the amended portions (which were underlined). As such, Examiner believes Applicant is arguing that the amended limitations integrate the claims into a practical application and provide significantly more than the judicial exception. Examiner respectfully disagrees.
Courts have determined that limitations that are indicative of integration into a practical application include (but are not limited to) improvements to the functioning of a computer, or to any other technology or a technical field, applying the judicial exception with, or by use of, a particular machine, and applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP 2106.05. In this case, the limitations do not provide improvements to the functioning of a computer, or to any other technology or a technical field (for example, improvements to the drilling equipment itself), there is no use of a particular machine, and the judicial exception is not applied in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Applicant then seems to be arguing that the invention provides a “computer-implemented solution, utilizing blockchain technology, and improvements to the blockchain technology for processing smart contracts,” in support of the idea that the invention provides significantly more than the abstract idea. Applicant further lists several points, d-l, which seem to be alleged improvements to technology. Examiner respectfully disagrees that these items provide an improvement to technology. As to the computer-specific smart contracts, smart contracts generated based on parsing the contract using natural language processing, and adding a specialized data field within a block of the distributed ledger, these limitations do not provide an improvement to technology, but are merely the invocation of computers as a tool to perform existing processes. As to the detection of conflicts between smart contracts, this is part of the abstract idea, and therefore, cannot provide significantly more than the abstract idea. As to state-based conflict detection between the smart contracts, this is also part of the abstract idea. As to incorporating a distributed ledger with blockchain technology, enabling a network of nodes with various access levels to interact with the distributed ledger, efficient management of large volumes of contracts, and a mechanism for decentralized access and regulation, these are not an improvement to technology.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARRIE S GILKEY whose telephone number is (571)270-7119. The examiner can normally be reached Monday-Thursday 7:30-4:30 CT and Friday 7:30-12 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached on 571-270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARRIE S GILKEY/Primary Examiner, Art Unit 3626
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